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08/22/90 LEX TEX LTD. v. HENRY HOWSON SKILLMAN

August 22, 1990

LEX TEX LTD., INC., APPELLANT
v.
HENRY HOWSON SKILLMAN, ET AL., APPELLEES



On Certification from the United States Court of Appeals for the District of Columbia Circuit

Rogers, Chief Judge, and Steadman and Farrel, Associate Judges.

The opinion of the court was delivered by: Steadman

In this certified question proceeding, we are asked to interpret the District of Columbia "long-arm" statute. D.C. Code § 13-423 (1989).

A Florida corporation has brought suit in the United States District Court for the District of Columbia against a Pennsylvania attorney and the partners of his law firm, alleging malpractice in legal representation before the United States Patent and Trademark Office, located at all relevant times in the District of Columbia. The basis for alleging jurisdiction is our statute that provides that a District of Columbia court may exercise personal jurisdiction over a person "as to a claim for relief arising from the person's . . . transacting any business in the District of Columbia." D.C. Code § 13-423(a) (1).

That the Pennsylvania attorney and, through him, his law firm "transact business" in the District of Columbia in the ordinary meaning of the phrase cannot be gainsaid. The legal question now before us arises because of a possible limitation imposed on the exercise of personal jurisdiction in the District of Columbia by the so-called "government contacts" principle. We hold that that principle does not apply to the facts before us

I

Plaintiff-appellant in this case, Lex Tex Ltd., Inc. ("Lex Tex"), a Florida corporation with its principal place of business in Florida, is the assignee of two patents protecting textile manufacturing processes. The original owner of the patents retained defendant-appellee Henry Howson Skillman and his law firm, Howson & Howson, in 1957 to prosecute the patent applications before the United States Patent and Trademark Office (the "Patent Office" or the "Office"), then located in the District of Columbia. *fn1 Skillman was both a partner at Howson & Howson and a citizen of Pennsylvania at all relevant times. Howson & Howson is a law partnership with its office in Pennsylvania. Appellee Skillman successfully prosecuted the applications and both were issued in 1963.

Lex Tex was assigned the patents and discovered sometime thereafter that they were apparently being infringed. Lex Tex brought suit in the United States District Court for the Southern District of Florida and in 1982 won a verdict for nearly nine million dollars against the infringers of one of the patents. On appeal, however, the United States Court of Appeals for the Federal Circuit reversed, J.P. Stevens & Co. v. Lex Tex Ltd., 747 F.2d 1553 (Fed. Cir. 1984), cert. denied, 474 U.S. 822, 106 S. Ct. 73, 88 L. Ed. 2d 60 (1985), concluding that Lex Tex's assignor, through its lawyers, had obtained the patent from the Patent Office by means of "inequitable conduct" and that the patent was therefore unenforceable. Id. at 1567. Likewise, in a separate action, another court concluded that the second patent had also been obtained by inequitable conduct. Lex Tex Ltd. v. American Barmag Corp., 4 U.S.P.Q.2d 1273 (W.D.N.C. 1987). Lex Tex then brought suit against Skillman and the other partners of the Howson & Howson firm. *fn2 Appellant alleged that Skillman acted negligently, wilfully and wantonly, and in breach of his contract with appellant's assignor by falling disclose to the Patent Office the existence of prior art, which was "known or in the exercise of reasonable care should have been known" to Skillman. Appellant claimed that Skillman's actions had resulted in "substantial economic loss due to the unenforceability" of the patents. *fn3

The United States District Court dismissed the complaint on the ground that it did not have personal jurisdiction over the defendants. The court held that the so-called "government contacts exception" to the District of Columbia "long-arm" statute applied, noting that Skillman's "function before [the Patent] Office was as an agent of individuals seeking the government's permission to do something, which could only be done in Washington because that is where the Patent Office was located."

Lex Tex appealed and the United States Court of Appeals for the District of Columbia Circuit certified the following question to us pursuant to D.C. Code § 11-723 (1989):

The question of law to be answered is this: Under D.C. Code § 13-423(a) (1), (b), and in view of the "government contacts" exception, is personal jurisdiction properly asserted in the District of Columbia in a suit by a Florida corporation against an attorney who resides in Pennsylvania based on these key allegations: (1) the defendant filed misleading documents and information with the United States Patent and Trademark Office (Patent Office) at a time when that Office was located in the District of Columbia; and (2) the misleading filings caused plaintiff to sustain substantial economic loss. In other words, does the "government contacts" exception to the exercise of personal jurisdiction over nonresidents apply when the defendant's contacts with the government themselves constitute the alleged culpable or liability-generating conduct for which plaintiff seeks to recover.

II

The question that we deal with here concerns the proper application of the principle, broadly stated, that "mere entry [into the District of Columbia] by non-residents for the purpose of contacting federal government agencies cannot serve as a basis for in personam jurisdiction." Rose v. Silver, 394 A.2d 1368, 1370 (D.C.1978), reh'g denied, 398 A.2d 787 (D.C.1979). The principle, referred to as the "government contacts" principle, originated in the context of a statute providing for service of process on foreign corporations. Act of March 3, 1901, ch. 854, § 1537, 31 Stat. 1189, 1419 (most recently codified at D.C. Code § 13-103 (1961)), repealed by Act of Dec. 23, 1963, Pub. L. No. 88-241, § 21 (a), 77 Stat. 478, 624. *fn4 That statute provided in pertinent part that when a foreign corporation is "doing business" in the District of Columbia, service on the corporation's local agent "shall be effectual to bring the corporation before the court." The concept of "doing business" in essence involved a continuing corporate presence and required a fairly "'systematic and continuous course of conduct'" in the District of Columbia. Rose, supra, 394 A.2d at 1373 (quoting Environmental Research Int'l, Inc. v. Lockwood Greene Engineers, Inc., 355 A.2d 808, 813 n.10 (D.C.1976) (en banc)). See AMAF Int'l, supra note 4, 428 A.2d at 851 (stating, in the context of D.C. Code 13-334, the present "doing business" statute, that "doing business" means "any continuing corporate presence in the forum state directed at advancing the corporation's objectives"). Mere contacts with the federal government, however, were generally understood not to constitute "doing business." See, e.g., Weisblatt v. United Aircraft Corp., 134 A.2d 713, 715 & n.2 (D.C.1957); Mueller Brass Co. v. Alexander Milburn Co., 80 U.S.App.D.C. 274, 276, 152 F.2d 142, 144 (1945). See also Fandel v. Arabian Am. Oil Co., 120 U.S.App.D.C. 193, 195, 345 F.2d 87, 89 (1965) (stating that contacts with the government of a sort "not . . . customarily associated with strictly commercial operations" do not constitute "doing business" under the statute). This reading of the phrase "doing business" was particularly understandable given that the early cases often involved claims for relief that were unrelated to the defendants' contacts with the government. See Traher v. De Havilland Aircraft of Canada, Ltd., 111 U.S.App.D.C. 33, 34, 294 F.2d 229, 230 (1961) (per curiam), cert. denied, 368 U.S. 954, 82 S. Ct. 397, 7 L. Ed. 2d 387 (1962); Mueller Brass, supra, 80 U.S.App.D.C. at 274, 152 F.2d at 142. In such instances, assertions of personal jurisdiction could raise serious due process concerns. See, e.g., Helicopteros Nacionales de Colombia v. Hall, 466 U.S. 408, 414-16, 104 S. Ct. 1868, 80 L. Ed. 2d 404 (1984) (where cause of action does not "arise out of" defendant's activities in forum, defendant must have "continuous and systematic" contacts with forum for assertion of personal jurisdiction to meet due process). *fn6 Thus, in the early cases that adumbrated the "government contacts" principle, the principle "was a way of articulating a limitation" on the service of process statute that served, at least in part, a due process purpose. Rose, supra, 394 A.2d at 1374. See, e.g., Mueller Brass, supra, 80 U.S.App.D.C. at 275 & n.1, 152 F.2d at 143 & n.1 (concluding that Michigan corporation was not "doing business" in the District when it maintained a representative here "for the purpose of gathering information from Government departments and agencies" and noting that even "ithout the ["doing business"] statute the question would still be present as a jurisdictional requisite to Constitutional due process").

In 1970, a "long-arm" statute was enacted that supplemented the service of process on foreign corporations statute. District of Columbia Court Reorganization Act of 1970, Pub. L. No. 91-358, 132(a), 84 Stat. 473, 549. The "long-arm" statute provides in pertinent part: "A District of Columbia court may exercise personal jurisdiction over a person, who acts directly or by an agent, as to a claim for relief arising from the person's . . . transacting any business in the District of Columbia." D.C. Code § 13-423(a) (1) (1989). In addition, the statute states: "hen jurisdiction over a person is based solely upon this section, only a claim for relief arising from acts enumerated in this section may be asserted against him." Id. § 13-423(b). Section 13-423 by its terms thus limits assertions of personal ...


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